Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Summary
Applicant’s arguments and claim amendments submitted January 29, 2026 have been entered into the file. Currently, claims 1, 3, and 5 are amended, claims 8-9 are new, and claims 6-7 are withdrawn from consideration, resulting in claims 1-5 and 8-9 pending for examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8 and 9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 8 and 9, claims 8 and 9 recite “75% or more of the insulating inorganic particles are present in the plurality of pores”. It is unclear where else the particles are located and what the value is with respect to (percent by volume, weight, number of particles, etc.).
Regarding claims 8 and 9, claims 8 and 9 recite “further comprising: insulating inorganic particles including the insulating inorganic particle”. It is unclear if the insulating inorganic particles are identical to “the insulating inorganic particle” of claim 1, if there are a plurality of insulating inorganic particles that are different but each contain “the insulating inorganic particle” of claim 1 in addition to other components/compounds, or if there are a plurality of insulating inorganic particles wherein only one of them is “the insulating inorganic particle” of claim 1. For the purpose of examination, this limitation is interpretated as meaning there are a plurality of insulating inorganic particles and each of the insulating inorganic particles of the plurality of insulating inorganic particles is the insulating inorganic particle of claim 1, pending further clarification from applicant.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-5, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2015/0180019 A1).
Regarding claims 1, 3, and 5, Lee teaches a negative electrode for a lithium ion secondary battery comprising a negative electrode collector (Cu foil, Lee [103]) and a negative electrode active material layer provided on the negative electrode collector (Lee [103]), wherein the negative electrode active material layer includes a negative electrode active material (negative active material, Lee Example 1), the negative electrode active material comprising:
a graphite particle coated on a surface thereof with an amorphous carbon (graphite, coal-based pitch, Lee Example 1)
an insulating particle (Si particles, Lee Example 1)
the insulating inorganic particle has an average particle diameter of 70 nm (Lee Example 1)
the insulating inorganic particle is present in the pore of the graphite particle (Lee Fig. 2)
Lee is silent to the pore size of the graphite particle., Fig. 2 of Lee depicts the insulating inorganic particles (12, Lee Fig. 2) in between graphite flakes (11, Lee Fig. 2), and the insulating inorganic particles of Lee Example 1 have a diameter of 70 nm. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to optimize the pore size of the graphite particle, including sizes falling within the claimed ranges of 1 µm or less (claim 1) and 200 nm or less (claim 3), in order to allow for sufficient distribution of the insulating inorganic particle in the pores of the graphite particle.
Regarding claim 4, Lee teaches all features of claim 1, as described above. Lee further teaches the graphite particle being a spheroidized graphite resulting from spheroidization of a scaly graphite (flake-shaped graphite, “sphere shaped”, Lee [90]).
Regarding claims 8 and 9, Lee teaches all features of claims 1 and 5, as described above. Lee further teaches insulating inorganic particles including the insulating inorganic particle (Si particles of Lee Example 1), wherein the graphite particle comprises a plurality of pores with a pore size of 1 µm or less, the plurality of pores including the pore (Lee Fig. 2, pore size explanation described above for claim 1).
Lee does not expressly state that 75% or more of the insulating inorganic particles are present in the plurality of pores with the pore size of 1 µm or less. Since the invention of Lee teaches the insulating inorganic particles being present in the pores, as described above, and does not expressly teach or suggest that the insulating inorganic particles are present anywhere other than in the pores, there is a reasonable basis to conclude that 75% or more of them are present in the pores.
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not provide motivation for someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the insulating inorganic particle of Lee (Si) for boehmite, alumina, or nanodiamond, and thus does not teach or render obvious a negative electrode active material comprising boehmite, alumina, or nanodiamond as the insulating inorganic particle, in combination with the limitations of claim 1.
Response to Arguments
Response – Specification Objections
The objection to the specification due to improper language in the abstract is overcome by applicant’s amendments to the abstract in the response received on January 29, 2026. The objection to the specification is withdrawn.
Response – Claim Rejections 35 USC § 112
The rejection of claim 3 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is overcome by applicant’s amendments to claim 3 in the response received January 29, 2026. This rejection to claim 3 is withdrawn.
Response – Claim Rejections 35 USC § 103
The rejections of claims 1-5 under 35 U.S.C. 103 as being unpatentable over Kim (US 2009/0269669 A1) in view of Xuan (Xuan, G. et al. A carbon-based anode combining with SiOx and nanodiamond for high performance lithium ion battery. Journal of Energy Storage. 25, 100901 (2019)) and Song (Song, Y. et al. Nanodiamonds: a critical component of anodes for high performance lithium-ion batteries. Chemical Communications. 52, 10497 (2016) are overcome by applicant’s amendments to claims 1 and 5 in the response received January 29, 2026. These rejections are withdrawn.
Applicant’s arguments with respect to claims 1 and 5 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Choi (US 2020/0343544 A1): appears to disclose a negative electrode active material comprising a spherical carbon-based particle, an amorphous carbon layer, and a nanoparticle including SiOx (Choi abstract, Fig. 1).
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/J.S.C./Examiner, Art Unit 1789 /MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789